(268) DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
[Docket No.: PTO-P-2012-0022]
Quick Path Information Disclosure Statement (QPIDS) Pilot Program
AGENCY: United States Patent and Trademark Office, Commerce.
ACTION: Notice.
SUMMARY: The United States Patent and Trademark Office (USPTO) is
implementing a pilot program intended to reduce pendency and applicant costs
when an information disclosure statement (IDS) is filed after payment of the
issue fee. This pilot program will permit an examiner to consider an IDS
after payment of the issue fee without the need to reopen prosecution,
effectively obviating the need to pursue a request for continued examination
(RCE). Where the examiner determines that no item of information in the IDS
necessitates reopening prosecution, the Office will issue a corrected notice
of allowability. In addition to reducing pendency, this pilot program will
promote efficiency in the examination process. There will be no fee required
to use this program, beyond existing fees, e.g., fees for IDS submission.
DATES: Effective Date: May 16, 2012.
Duration: The QPIDS Pilot Program will run from its effective date until
September 30, 2012. Therefore, an IDS submitted under this pilot program
must be filed on or before September 30, 2012. The USPTO may extend this
pilot program (with or without modifications) depending on feedback from
the participants and the effectiveness of the program.
FOR FURTHER INFORMATION CONTACT: Nicole D. Haines, Legal Advisor, or
Raul Tamayo, Legal Advisor, Office of Patent Legal Administration, Office
of the Deputy Commissioner for Patent Examination Policy, by telephone at
(571) 272-7717 or (571) 272-7728, respectively, or by mail addressed to:
Mail Stop Comments - Patents, Commissioner for Patents, P.O. Box 1450,
Alexandria, VA 22313-1450.
SUPPLEMENTARY INFORMATION: Applicants who become aware of information after
payment of the issue fee often file RCEs to have this information
considered by an examiner. This is because 37 CFR 1.97 does not provide
applicants with the opportunity to file an IDS after payment of the issue
fee. Thus, applicants who determine that they need to file an IDS after
payment of the issue fee must either file a petition under 37 CFR 1.313(c)(2)
to withdraw the application from issue in order to permit entry of an RCE and
have the accompanying IDS considered by the examiner, or file a petition
under 37 CFR 1.313(c)(3) to withdraw the application from issue for express
abandonment in favor of a continuing application. These applications
experience delays associated with the filing and processing of the RCE (or
continuing application), even if the information in the IDS would not have
otherwise necessitated reopening prosecution.
In order to reduce pendency delays and costs associated with the current
process for considering IDS submissions filed after payment of the issue fee,
IDS submissions made in accordance with this pilot program will be considered
by the examiner before determining whether prosecution should be reopened.
Under this pilot program, prosecution will only be reopened where the
examiner determines that reopening prosecution is necessary to address an
item of information in the IDS. When the items of information in the IDS do
not require prosecution to be reopened, the application will pass to issue,
thereby eliminating the delays and costs associated with RCE practice.
A. QPIDS Pilot Program Requirements
In order to be eligible to participate in this pilot program, an
application must be a utility or reissue application (i.e., this pilot
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program does not pertain to design or plant applications). In addition, as
set forth in detail below, a QPIDS submission must include the following
items: (1) a transmittal form that designates the submission as a QPIDS
submission, such as form PTO/SB/09; (2) an IDS accompanied by a timeliness
statement set forth in 37 CFR 1.97(e), with the IDS fee set forth in 37 CFR
1.17(p); (3) a Web-based ePetition to withdraw from issue under 37 CFR
1.313(c)(2), with the petition fee set forth in 37 CFR 1.17(h); and (4) an
RCE, which will be treated as a "conditional" RCE, with the RCE fee under 37
CFR 1.17(e). All papers associated with this pilot program must be filed via
the USPTO's Electronic Filing System-Web (EFS-Web), and all fees must be paid
by authorization to charge a deposit account.
1. Transmittal Form
A new transmittal form, PTO/SB/09, has been made available at
http://www.uspto.gov/forms/index.jsp to identify submissions made pursuant
to this pilot program. Use of this form will help the Office to quickly
identify QPIDS submissions and facilitate timely processing of such
submissions. The Office of Management and Budget (OMB) has determined that,
under 5 CFR 1320.3(h), Form PTO/SB/09 does not collect "information" within
the meaning of the Paperwork Reduction Act of 1995.
2. IDS with Timeliness Statement and Fee
A submission under this pilot program must include an IDS in accordance
with 37 CFR 1.97 and 37 CFR 1.98. Because 37 CFR 1.97(d) does not provide for
the filing of an IDS submission after payment of the issue fee, the USPTO is
sua sponte waiving 37 CFR 1.97(d) for IDS submissions filed under this pilot
program to the extent that IDS submissions pursuant to this pilot program may
be filed after payment of the issue fee. However, the requirements of 37 CFR
1.97(d)(1) and (d)(2) that the IDS be accompanied by a timeliness statement
specified in 37 CFR 1.97(e) and the fee set forth in 37 CFR 1.17(p) are not
waived.
IDS submissions made under this pilot program must be accompanied by
either the timeliness statement set forth in 37 CFR 1.97(e)(1) or the
imeliness statement set forth in 37 CFR 1.97(e)(2). The QPIDS transmittal
form PTO/SB/09 provides the appropriate timeliness statements for selection
by applicant. Additionally, the IDS submission must include the IDS fee set
forth in 37 CFR 1.17(p), by including an authorization to charge a deposit
account. The QPIDS transmittal form PTO/SB/09 provides an authorization to
charge a deposit account for payment of the IDS fee. A submission that
provides for payment of the IDS fee (or any other required fee) via a fee
transmittal form authorizing another form of payment does not comply with the
requirements of this pilot program. Thus, applicants must have an established
USPTO deposit account to participate in this pilot program. Information
on USPTO deposit accounts is available at
http://www.uspto.gov/about/offices/cfo/finance/Dep_Account_Rules_and_Info.jsp.
3. Web-based ePetition and Fee
A submission under this pilot program must be filed with a "Petition to
Withdraw from Issue After Payment of the Issue Fee" (37 CFR 1.313(c)(2))
submitted as a Web-based ePetition via EFS-Web with the petition fee set
forth in 37 CFR 1.17(h). Information regarding submission of Web-based
ePetitions is available at
http://www.uspto.gov/patents/process/file/efs/guidance/epetition-info.jsp.
Depending on whether a patent number has been assigned, applicants must
select either the "Petition to Withdraw from Issue after Payment of the Issue
Fee (37 CFR 1.313(c)(1) or (2))" or the "Petition to Withdraw from Issue after
Payment of the Issue Fee (37 CFR 1.313(c)(1) or (2) with Assigned Patent
Number)." The RCE that accompanies a QPIDS submission under this pilot
program will be deemed sufficient to satisfy the requirement in 37 CFR
1.313(c)(2) that the petition to withdraw from issue is for consideration of
an RCE in compliance with 37 CFR 1.114, even though the RCE will only be
processed if the examiner determines that any item of information in the IDS
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necessitates reopening prosecution.
4. RCE and Fee
A submission under this pilot program must include an RCE, with the IDS
meeting the submission requirement for the RCE. The RCE will be treated as a
"conditional" RCE until the examiner determines whether any item of
information in the IDS necessitates reopening prosecution. Additionally, the
QPIDS submission must be accompanied by the RCE fee under 37 CFR 1.17(e) in
order to process the ePetition to withdraw the application from issue under
37 CFR 1.313(c)(2).
Under this pilot program, the RCE will be processed and treated as an RCE
under 37 CFR 1.114 in the event the examiner determines that any item of
information contained in the IDS necessitates the reopening of prosecution in
the application. In this instance, the IDS fee under 37 CFR 1.17(p) will be
automatically returned because the IDS complies with 37 CFR 1.97(b)(4).
Otherwise, if the examiner determines that no item of information in the IDS
necessitates reopening prosecution, the RCE will not be processed and the RCE
fee will be automatically returned. This will save applicants both the time
and costs associated with RCE practice. An RCE filed pursuant to this pilot
program complies with the timing requirement of 37 CFR 1.114(a)(1). This
pilot program is an exception to the provision in MPEP 706.07(h), which
provides that the Office will treat a "conditional" RCE as if an RCE had been
filed. Otherwise, the Office generally treats conditional requests without
regard to the "conditional" designation (see, e.g., MPEP 201.06(d), MPEP
706.07(g), and MPEP 714.13).
B. Processing of QPIDS Pilot Program Submissions: A compliant ePetition to
withdraw the application from issue, pursuant to 37 CFR 1.313(c)(2), will be
granted immediately upon submission. After the grant of such a petition, the
IDS submission made under this pilot program will be identified and placed on
the examiner's "expedited" docket for consideration. If the examiner determines
that no item of information in the IDS necessitates reopening prosecution,
the examiner will issue a corrected notice of allowability (i.e., form PTOL-
37). The corrected notice of allowability will identify the IDS and be
accompanied by a copy of the submitted IDS listing (e.g., form PTO/SB/08) as
considered by the examiner. See MPEP 609.05(b). Considered information will
be printed on the patent pursuant to MPEP 609.06. No applicant response to the
corrected notice of allowability will be necessary. In this instance, the RCE
will not be processed and the RCE fee will be automatically returned by the
Office (the IDS and petition fees will not be returned). In this instance,
where the examiner has determined that prosecution does not need to be
reopened, a new notice of allowance and fee(s) due (i.e., PTOL-85) will not
be issued. To the extent provisions of 37 CFR 1.313(a) are not consistent
with this pilot program, such provisions are hereby waived for QPIDS pilot
program submissions.
If the examiner determines that any item of information in the IDS
necessitates reopening prosecution, the RCE will be processed and placed on
the examiner's docket. In this instance, the RCE will be deemed filed as of
the filing date of the QPIDS submission, and the IDS fee will be automatically
returned by the Office because the IDS complies with 37 CFR 1.97(b)(4) (the
petition fee will not be returned). The applicant will be notified that
prosecution is being reopened (via a form PTO-2300), and such notification
will identify the IDS and be accompanied by a copy of the submitted IDS
listing (e.g., form PTO/SB/08) as considered by the examiner. See MPEP
609.05(b). If the application is subsequently again found allowable, the
applicant may request that the previously paid issue fee be reapplied toward
the issue fee that is now due in the same application. See MPEP 1306.
A non-compliant QPIDS submission that otherwise complies with the
requirements of 37 CFR 1.114 will be treated as an RCE. For example, failure
to provide an authorization to charge a deposit account for payment of the
IDS fee or failure to select or otherwise provide an appropriate timeliness
statement will result in the RCE being processed. Similarly, a submission
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under this pilot program that includes an amendment will be processed as an
RCE.
Taking post-issue fee payment processing times into consideration,
applicants are strongly encouraged to file IDS submissions under this pilot
program as soon as the applicants become aware that it is necessary to submit
an IDS. Applicants are reminded, where applicable, to include a statement
under 37 CFR 1.704(d) so as to avoid reduction in patent term adjustment
pursuant to 37 CFR 1.704(c)(10). See, Revision of Patent Term Adjustment
Provisions Relating to Information Disclosure Statements, 76 Fed. Reg. 74700,
74701 (December 1, 2011) (final rule).
Additional information regarding this pilot program will be made available
on the USPTO's Web site at http://www.uspto.gov/patents/init_events/qpids.jsp.
May 3, 2012 DAVID J. KAPPOS
Under Secretary of Commerce for Intellectual Property and
Director of the United States Patent and Trademark Office
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